There’s a lot in the pipeline that could significantly impact on patent and other laws in Chile. Negotiations on the modernisation of the trade component of the EU-Chile Association Agreement continue to make progress, with multiple rounds of talks taking place over the past two years. Efforts to amend the IP Code and introduce provisional applications, for example, also continue – although they have slowed down of late as a result of the pandemic diverting attention to more immediate issues. In October 2020, an overwhelming majority of Chileans voted for the creation of a new constitution which will have significant implications for the country’s socio-economic and legal framework.
- Sargent & Krahn
- Albagli Zaliasnik SpA
- Claro & Cia
- Johansson & Langlois
- Villaseca Abogados
- Baker McKenzie
- Beuchat, Barros & Pfenniger
- Covarrubias & Cía
- Porzio Ríos García
Albagli Zaliasnik SpA
Distinguished by its deep life sciences industry knowledge and facility for patent litigation, Albagli Zaliasnik provides essential support to pharmaceutical, biotechnology, food and beverage and agro-chemical companies as they navigate complex infringement issues and matters before the Chilean health and drug and competition authorities. Also adept at prosecution and cross-border transactions, the set offers a sophisticated, well-rounded service. Notable recent highlights include defending Abbott Laboratories in a battle with Bayer over two of the world’s most common oral contraceptives – Abbott’s Femelle and Bayer’s Yasmin. Joining forces to secure a crucial first-instance win for their client, Ariela Agosin, Daniel López and Eugenio Gormáz form the backbone of the patent practice. The group’s senior partner, Agosin capitalises on blended IP, competition and regulatory know-how and litigation experience to make the difference: “She is a quick study on technology and a practical, clear-sighted adviser.” López has similarly broad horizons, making him an asset to companies in any regulated industry; while his contributions as a member of litigation teams always add tremendous value. Well deserving of his promotion to the partnership in May 2020, IP group director Gormáz oversees filing activities and manages portfolios with acute attention to detail, and dispenses thoughtful strategic counsel to his many life sciences followers.
As elite IP firms around the world, Fortune 500s and Chilean innovators all know well, Alessandri produces high-quality patent work and outcomes. Fielding a multi-disciplinary team, it helps clients to procure robust, commercially valuable rights; exploit them for business purposes; and enforce or defend them in infringement scenarios. Sources appreciate its “thorough technical expertise, open lines of communication and global view”, and have particularly good things to say about Santiago Ortúzar, who presides over the practice. “Santiago is incredibly responsive and knowledgeable, and presents options where other Chilean firms don’t seem able to. He isn’t impulsive, but gives calculated advice; and he makes difficult patent processes clean and easy for clients.” One source reflects: “With his support, we have developed a number of patent applications, all of which have been granted worldwide without any rejection. He’s a key partner to us and fundamental to the success of our portfolio.” He has a superb hit rate in patent litigation, too, and even has a victory at the US International Trade Commission to his name. He frequently collaborates with Rodrigo Velasco Alessandri, who also brings vital leadership as managing partner. Velasco Alessandri has a refined understanding of business risk, which he applies to great effect in transactional and contentious scenarios. Recommended for the first time this year, Fernando López is a seasoned engineer and former Chilean patent office examiner who gives the group technical muscle. Highlighted as a future leader of the practice, Rodrigo Valenzuela is another name to keep on the radar for those seeking a good IP and data privacy generalist.
Baker McKenzie may be defined by its global capabilities, but its local offices are no less deserving of credit when judged on their own merits. When instructing the firm in Chile, for example, clients enjoy a sterling service from Valentina Venturelli with respect to the filing of both patents and trademarks. Venturelli is intimately familiar with every nuance of prosecution at the National Institute of Industrial Property (INAPI) and orchestrates successful registrations with impressive efficiency. Protecting rights internationally is also a daily feature of her practice, which she carries out with aplomb.
Beuchat, Barros & Pfenniger
Engaged in patenting activity in the mining, life sciences, agrochemical and high-technology domains for more than five decades, Beuchat, Barros & Pfenniger supplies mature advice on prosecution, tenacious support in litigation, and insightful opinions and analyses on freedom to operate and myriad other issues. Through its representations and extra-curricular activities, the team has made an indelible contribution to the advancement of the Chilean IP ecosystem. Critical in sustaining its lofty reputation is Andrés Melossi Jiménez, an internationally well-connected partner and a go-to for foreign companies and referring law firms. One overseas source comments: “If we have something in Chile, we send it directly to Andrés – he’s a great and reliable IP expert whose service is extremely high quality.”
Unrivalled in terms of bench depth in intellectual property, Carey has the largest number of individual representatives in the IAM Patent 1000 Chile rankings for 2021. The first choice of leading multinationals and domestic businesses, the team overlays its knowledge of patent law with a strategic approach that generates a lot of repeat business. Responsible for roughly 20% of the market’s patent applications, the firm is richly experienced in prosecution and has recently put its learnings to good use in successfully registering an important patent for Chilean chemical concern FOSFOQUIM; and in representing a prestigious Chilean university and a top global research-driven pharmaceutical company. Whether in prosecution or litigation – another area of proficiency – Carey showcases an affinity for cross-border strategising in Latin America and beyond. Partners Francisco Carey and Guillermo Carey form the dynamic pairing at the epicentre of this practice. Francisco makes light work of complex contentious and transactional briefs, and is among the most commercially minded practitioners in the country; so too Guillermo, a life sciences authority, IP all-rounder and data privacy star. Next up in terms of seniority, Fernando García shines as a big-picture thinker with an intuitive grasp of the pharmaceutical sector and the role that intangible assets play within it. Jorge Fuentes is the group’s senior patent specialist and is a repository of trust when it comes to technical matters and prosecution; his background is in mechanical engineering. Rising star Tabata Santelices – who makes her debut in the rankings alongside Fuentes – is smartly cultivating a broad licensing, litigation and prosecution skillset in all aspects of intellectual property, setting herself up for future success whichever way the IP winds blow.
ClarkeModet excels on everything from prior art searches to strategic counselling, application drafting and patent prosecution and maintenance. It deploys well-configured systems to obtain patents both in Chile and abroad, and fulfils its role “with exceptional timeliness and responsiveness”. The local managing director is Ignacio Mattar, who has standout credentials in industrial civil engineering, chemical engineering and technological innovation and entrepreneurship. He reads the patent landscape with unerring accuracy. Technical and legal services manager Danica Mardesic has played a key role in developing the firm’s consulting, data protection and plant varieties practices.
Claro & Cia
The commercial touch that Claro brings to intellectual property lends itself well to patent transactional work – one of several fortes for this eminent full-service player. With a flair for complex problem solving, the ensemble also performs admirably on patent procurement and oppositions matters, drawing strength from the efficiency of its cutting-edge software and case management tools. Another advantage is conferred by the leadership of Felipe Claro, whose illustrious career has encompassed myriad matters of first impression and cases with significant implications for the business concerns of the parties involved. His name resonates internationally. He has instilled a collaborative approach in the group and regularly teams up with Claus Krebs and Trinidad Rojas – as he did recently on behalf of Synthon to successfully cancel a Novartis patent in a result that ended more than five years of litigation. Krebs has chalked up two decades of high-level patent and trademark practice, during which he has developed niche expertise in software. Effective cooperation with other departments in the firm is a hallmark of his approach: he’s always joining the dots to give complete advice. Much credit for the smooth management of the patent practice is owed to Trinidad Rojas, who has cracked the code when it comes to keeping household-name international clients happy.
Covarrubias & Cía
Maintaining its acuity in its strongholds of life sciences, mining and minerals, pulp and paper, chemicals and food and drink, Covarrubias & Cia has lately shown increased specialisation in regulatory law, plant varieties, energy innovation, artificial intelligence and robotics. This is a young, forward-thinking and proactive boutique that is constantly and conscientiously expanding its horizons. The integrative set-up of its team – comprised of seasoned lawyers, scientists, engineers, designers and paralegals – facilitates a well-rounded, dynamic service and encourages innovative thinking; together with its zippy speed and responsiveness, this has earned it a loyal following in the market. Managing partner Arturo Covarrubias supervises the group’s diverse activities, but emphasises litigation and enforcement in his client work. That said, he has also enjoyed some major wins in prosecution recently, such as a plant recombinant DNA patent obtained on behalf of Monsanto. Showcasing his regional know-how, he also assisted CMPC Tissue – the largest paper company in Latin America – with the registration of a paper-dispensing patent in eight jurisdictions, which involved extensive freedom-to-operate reporting.
Johansson & Langlois
Foreign associates describe storied outfit Johansson & Langlois as a brilliant collaborator on patent matters in Chile: “We have always had a good relationship with the firm – it is quick to respond and its processes for prosecution work are smooth, so we never have any problems with our cases. When we require additional input, the team is always there for us to provide what we need. It has been our first port of call for patent filing in Chile for decades.” Another highlights the set’s professional approach and timely, informative replies. Keeping patrons satisfied in this way is a highly qualified group of professionals with expertise spanning the mechanical, chemical and electrical arts. They capitalise on finely calibrated workflow systems and technological tools to carry out their primary function efficiently, saving time for added-value strategic thinking and higher-level counselling. The group takes its cue from managing partner and head of patents Felipe Langlois, whose name is a byword for quality. Former patent office examiner Marcela Ramírez is the leading technical mind in the mechanical engineering and industrial designs space.
Porzio Ríos García
Porzio Ríos García’s IP offering is a sophisticated one: its lawyers have superb academic credentials, extensive practical experience and refined language and communication skills; while its technical staff collectively cover many scientific and engineering disciplines. Putting the focus on quality, the group takes to diverse patent prosecution, contractual and contentious tasks with equal finesse, while also providing insight on IP-adjacent areas such as e-commerce and data privacy. Cristóbal Porzio is a key contact for IP litigation and technology transactions.
Sargent & Krahn
“Sargent & Krahn has a rare depth of knowledge in intellectual property, especially patent law. The quality of its work is outstanding; as are its energy, enthusiasm and round-the-clock availability. Its professionals also have a thorough understanding of clients’ industry needs.” The latter point is all the more impressive considering the technical and sector diversity within the practice – the group spreads itself widely, though not thinly. Forming an incredibly effective pairing, Juan Pablo Egaña and Cristián Barros have lately reversed adverse decisions by INAPI on behalf of Syngenta and numerous other companies, proving their dexterity in Industrial Property Court proceedings. They have also prosecuted applications through to successful grant for the likes of Tencent and Dow Agrosciences, here again utilising their finely honed advocacy skills to overcome examiner objections. Egaña captains the side and is a veritable encyclopaedia of patent and regulatory law, with a dedicated following of pharmaceutical and agrochemical clients. Sources describe him as “amazing in court and one of the best in Chile”. Benefiting greatly from Egaña’s tutelage, recently promoted partner Barros has proved himself indispensable since joining Sargent & Krahn a decade ago.
Silva runs one of the busiest and best patent filing services in the country, but doesn’t stop there: its cohesive team of lawyers and engineers supports clients across the patent lifecycle, with an inclination for complex litigation and transactional assignments. The firm has a sterling reputation among Chilean universities, but is also popular with domestic innovators, from which it garners effusive reviews. One referee comments: “Working closely with us as a team, Silva’s professionals write the best patents and protect what matters most in the strongest way possible. They understand the commercial value of our new ideas and help us to make better decisions on protecting and using them. Thanks to Silva, we have IP policies and processes that are better suited to our growing innovation efforts.” The key contacts here are partners Rodrigo León, Francisco Silva and Andrés Grunewaldt Cabrera, and associate Sebastian Alvarado. Demonstrating keen strategic vision, León custom designs IP approaches that have a hugely positive impact on the academic institutions and companies that he represents; these include Gilead Sciences, which he is assisting with its HIV and HCV patent portfolios. Silva blends rigorous regulatory knowledge into the practice; while Grunewaldt stands out as the squad’s leading litigator. Alvarado serves as patent director, while also executing flawlessly on prosecution and portfolio management instructions.
Reputable IP and corporate outfit Villaseca has a rich tradition protecting the cornerstone innovations of homegrown commercial enterprises and academic institutions, as well as high-flying international companies. Well-equipped for challenging prosecution and dispute resolution mandates, Villaseca is a fitting destination for one-stop IP shopping. A high-level strategist with vast experience, Eduardo Molina is the first name on the team sheet. Also recommended is Loreto Vera, an astute portfolio developer with a focus on the life sciences.
Other recommended expertsJuan Alberto Diaz Wiechers is an international IP thinker who has lived and been educated in multiple countries. He is sought after for on-point counsel on a wide range of patent, trademark and other IP matters, as well as his special expertise in plant varieties. He is the founder of DiazWiechers. “Juan Francisco Reyes gives helpful, clear and reliable advice and a swift and friendly service. He is a brilliant patent lawyer, but also an expert in numerous other fields such as tax and employment law.” SCR Abogados is his base of operations.
- Ariela Agosin - Albagli Zaliasnik SpA
- Francisco Carey - Carey
- Guillermo Carey - Carey
- Felipe Claro - Claro & Cia
- Juan Pablo Egaña - Sargent & Krahn
- Felipe Langlois - Johansson & Langlois
- Rodrigo Velasco Alessandri - Alessandri
- Sebastian Alvarado - Silva
- Cristián Barros - Cariola, Díez, Pérez-Cotapos
- Jorge Fuentes - Carey
- Fernando García - Carey
- Eugenio Gormáz - Albagli Zaliasnik SpA
- Rodrigo León - Silva
- Daniel López - Albagli Zaliasnik SpA
- Fernando López - Alessandri
- Andrés Melossi Jiménez - Beuchat, Barros & Pfenniger
- Eduardo Molina V - Villaseca Abogados
- Santiago Ortúzar - Alessandri
- Marcela Ramírez - Johansson & Langlois
- Juan Francisco Reyes - SCR Abogados
- Trinidad Rojas - Claro & Cia
- Francisco Silva - Silva
- Rodrigo Valenzuela - Alessandri
- Valentina Venturelli - Baker McKenzie (Chile)
- Loreto Vera C - Villaseca Abogados
- Arturo Covarrubias - Covarrubias & Cía
- Juan Alberto Diaz Wiechers - Diaz Wiechers SA
- Andrés Grunewaldt Cabrera - Silva
- Claus Krebs - Claro & Cia
- Danica Mardesic - ClarkeModet
- Ignacio Mattar - ClarkeModet
- Tabata Santelices - Carey